The easy answer is “the sooner the better” but the concept of registrability plays an important part in the choice of a mark and should be considered at an early stage. The right to registration is not automatic and a proposed trademark must comply with the Act. This is broadly referred as “registrability”. The existence of several characteristics may preclude obtaining a registration. A prospective trademark owner should be aware of these restrictions.
A trademark will not registrable if it is:
(a) primarily merely a name or the surname – a word primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years;
(b) clearly descriptive or deceptively misdescriptive – whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the goods or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;
(c) the name of goods or services – the name in any language of any of the goods or services in connection with which it is used or proposed to be used;
(d) confusing with a registered trade mark;
(e) a prohibited trademark – a sign or combination of signs whose adoption is prohibited by section 9 or 10, which deal with various types of prohibited marks which include official marks;
(f) a denomination under the Plant Breeders’ Rights Act the adoption of which is prohibited by section 10.1;
(g) a protected geographical indication for a wine – in whole or in part a protected geographical indication, where the trademark is to be registered in association with a wine not originating in a territory indicated by the geographical indication;
(h) a protected geographical indication for a spirit – in whole or in part a protected geographical indication, where the trade mark is to be registered in association with a spirit not originating in a territory indicated by the geographical indication.
(i) a protected geographical indication for an agricultural product or food – in whole or in part a protected geographical indication, and the trademark is to be registered in association with an agricultural product or food – belonging to the same category, as set out in the schedule to the Act, as the agricultural product or food identified by the protected geographical indication – not originating in a territory indicated by the geographical indication;
(j) an Olympic mark – a mark, the adoption of which is prohibited by the Olympic and Paralympic Marks Act;
(k) dictated primarily by a utilitarian function – a mark whose features are dictated primarily by a utilitarian function.
Another consideration relates to the distinctiveness of the proposed mark. During the examination of a pending application an examiner now may consider the distinctiveness of the applied for trademark and to issue an examiner’s report refusing an application because the applied for mark is not inherently distinctive. An applicant must furnish the Registrar with any evidence that the Registrar may require establishing that the trademark is distinctive at the filing date of the application if the Registrar’s preliminary view is that the trademark is not inherently distinctive.
If a mark is not registrable it will be difficult, if not impossible, to protect and may not be a good choice. In addition, if a mark lacks distinctiveness it may not be registerable or the applicant may face the added expense of filing evidence, which will not be possible unless the mark has been used.
If you have questions, please contact me at mckeown@gsnh.com.
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
A version of this article originally appeared on The Lawyer’s Daily website published by LexisNexis Canada Inc.